Amicus Curiae Brief — RiseandShine Corporation, dba Rise Brewing, Petitioner v. PepsiCo, Inc.
Supreme Court briefSep 15, 2026
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No. 24-1016
In the Supreme Court of the United States
RISEANDSHINE CORPORATION, DBA RISE BREWING,
PETITIONER
v.
PEPSICO, INC.
ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE SUPPORTING VACATUR
D. JOHN SAUER
Solicitor General
Counsel of Record
BRETT A. SHUMATE
Assistant Attorney General
MALCOLM L. STEWART
Deputy Solicitor General
ANTHONY A. YANG
Assistant to the
Solicitor General
DANIEL TENNY
BEN LEWIS
Attorneys
Department of Justice
Washington, D.C. 20530-0001
SupremeCtBriefs@usdoj.gov
(202) 514-2217
QUESTION PRESENTED
Whether a trademark’s inherent strength presents a
question of fact in a likelihood-of-confusion analysis under 15 U.S.C. 1114.
(I)
TABLE OF CONTENTS
Page
Interest of the United States....................................................... 4
Introduction................................................................................... 2
Statement ...................................................................................... 4
A. Legal background ............................................................. 4
1. Trademarks ........................................................... 4
2. Registration and distinctiveness .......................... 5
3. Trademark infringement and trademark
strength ................................................................. 5
B. Factual and procedural background ............................... 9
Summary of argument ............................................................... 13
Argument..................................................................................... 16
A trademark’s inherent strength is predominately a
question of fact ........................................................................ 16
A. A question that entails a primarily factual inquiry is
treated as a factual question at summary judgment ... 16
B. A trademark’s inherent strength measures the
mark’s probable effect on the minds of ordinary
consumers at the time of the mark’s first use,
which entails a primarily factual inquiry ................. 19
1. Inherent strength is relevant to a likelihood of
consumer confusion and therefore measures
the mark’s effect in the minds of such
consumers ............................................................ 20
2. Inherent strength entails a primarily factual
inquiry ................................................................. 23
3. The relationship between trademark strength
and the overall likelihood-of-confusion analysis
reinforces the predominately factual nature of
the trademark-strength inquiry ......................... 27
C. The predominately factual nature of the inherentstrength inquiry does not preclude summary judgment in appropriate cases ................................................. 30
Conclusion ................................................................................... 33
(III)
IV
TABLE OF AUTHORITIES
Cases:
Page
Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4 (2d Cir. 1976) ........................................................
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986)..................................................................
B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138 (2015)..................................................................
Bufkin v. Collins, 604 U.S. 369 (2025) ........................
Car-Freshner Corp. v. American Covers, LLC,
980 F.3d 314 (2d Cir. 2020) ....................................................
First Sav. Bank, F.S.B. v. First Bank Sys., Inc.,
101 F.3d 645 (10th Cir. 1996) ....................................................
Florida Int’l Univ. Bd. of Trs. v. Florida Nat’l
Univ., Inc., 830 F.3d 1242 (11th Cir. 2016) ..........................
Hana Fin., Inc. v. Hana Bank,
574 U.S. 418 (2015)..................................................................
Jack Daniel’s Props., Inc. v. VIP Prods. LLC,
599 U.S. 140 (2023)..................................................................
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).............................................
Lang v. Retirement Living Publ’g Co.,
949 F.2d 576 (2d Cir. 1991) ....................................................
Loper Bright Enters. v. Raimondo,
603 U.S. 369 (2024)..................................................................
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894
(9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003) ...............
Max Rack, Inc. v. Core Health & Fitness, LLC,
40 F.4th 454 (6th Cir. 2022) ...................................................
Monasky v. Taglieri, 589 U.S. 68 (2020) .................................
New York Stock Exch., Inc. v. New York, New
York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002) .....................
Ornelas v. United States, 517 U.S. 690 (1996) ........................
V
Cases—Continued:
Page
Plus Prods. v. Plus Disc. Foods, Inc.,
722 F.2d 999 (2d Cir. 1983) ....................................................
Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir.), cert. denied,
368 U.S. 820 (1961)..................................................................
Santa Fe Indep. Sch. Dist. v. Doe,
530 U.S. 290 (2000)..................................................................
Savin Corp. v. Savin Grp.,
391 F.3d 439 (2d Cir. 2004), cert. denied,
546 U.S. 822 (2005)..................................................................
Souza v. Exotic Island Enters., Inc.,
68 F.4th 99 (2d Cir. 2023) .......................................................
Star Indus., Inc. v. Bacardi & Co.,
412 F.3d 373 (2d Cir. 2005), cert. denied,
547 U.S. 1019 (2006)................................................................
Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763 (1992)..................................................................
U.S. Bank N.A., Tr. ex rel. CWCapital Asset Mgmt.
LLC v. Village at Lakeridge, LLC,
583 U.S. 387 (2018)..................................................................
United States Patent & Trademark Office v. Booking.com B.V., 591 U.S. 549 (2020) .........................................
Variety Stores, Inc. v. Wal-Mart Stores, Inc.,
888 F.3d 651 (4th Cir. 2018) ...................................................
Wal-Mart Stores, Inc. v. Samara Bros.,
529 U.S. 205 (2000)..................................................................
Constitution, statutes, and rules:
U.S. Const.:
Amend. I ...............................................................................
Amend. IV ............................................................................
Trademark Act of 1946, ch. 540, 60 Stat. 427
(15 U.S.C. 1051 et seq.) ...........................................................
VI
Statutes and rules—Continued:
Page
15 U.S.C. 1051-1072.............................................................
15 U.S.C. 1062-1070.............................................................
15 U.S.C. 1052 ......................................................................
15 U.S.C. 1052(e)(1) .............................................................
15 U.S.C. 1052(f )..................................................................
15 U.S.C. 1057(b) .................................................................
15 U.S.C. 1065 ......................................................................
15 U.S.C. 1114(1) .................................................................
15 U.S.C. 1122(a) .................................................................
15 U.S.C. 1125(c) .................................................................
15 U.S.C. 1125(a)(1)(A) .......................................................
15 U.S.C. 1127 ......................................................................
35 U.S.C. 2 ..................................................................................
Fed. R. Civ. P. 56(a) ..................................................................
Miscellaneous:
J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (5th ed.):
Vol. 1 (2025) ..........................................................................
Vol. 3 (2026) ..........................................................................
3 Restatement of Torts (1938) ..................................................
Restatement (Third) of Unfair Competition (1995) ...............
In the Supreme Court of the United States
No. 24-1016
RISEANDSHINE CORPORATION, DBA RISE BREWING,
PETITIONER
v.
PEPSICO, INC.
ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE SUPPORTING VACATUR
INTEREST OF THE UNITED STATES
The question presented in this case is whether a trademark’s inherent strength—a factor relevant to the likelihood-of-confusion inquiry in trademark-infringement
actions, 15 U.S.C. 1114(1), 1125(a)(1)(A)—is a factual
question. The United States Patent and Trademark Office (PTO) registers trademarks, see 15 U.S.C. 10621070, and is responsible for disseminating to the public
information with respect to trademarks and for advising
the President and federal agencies on intellectual-property policy issues, 35 U.S.C. 2. The United States also
owns enforceable trademarks (e.g., U.S. Mint®) and may
be subject to suit for trademark infringement, 15 U.S.C.
1122(a) and (c). The United States therefore has a substantial interest in the Court’s resolution of the question
presented. At the Court’s invitation, the United States
filed a brief at the petition stage of this case.
(1)
2
INTRODUCTION
The central issue in actions alleging infringement of
a valid trademark is whether the allegedly infringing
conduct “is likely to produce confusion in the minds of
consumers about the origin of the goods or services in
question.” KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 117 (2004). To guide
that inquiry, the courts of appeals have developed various multi-factor tests, all of which treat the “strength”
of the senior user’s mark as a relevant consideration.
Assessment of a mark’s strength depends on both its
“inherent” (or “conceptual”) strength and its “acquired”
(or “commercial”) strength, which are assessed with the
ultimate goal of determining whether consumers perceive the mark as identifying the source of a good or
service. The dispute presently before the Court involves inherent strength, which measures the degree to
which a mark can identify a good’s actual source at the
time of the mark’s first use.
The Second Circuit has stated that a mark’s inherent
strength is a “ ‘legal question’ ” to be decided by a court
at summary judgment. Pet. App. 6a (citation omitted).
That is incorrect. Where an inquiry “operates from the
perspective of an ordinary purchaser or consumer,” it is
ordinarily treated as a factual question within “the ken
of a jury.” Hana Fin., Inc. v. Hana Bank, 574 U.S. 418,
420, 422 (2015). The assessment of a mark’s inherent
strength involves such an inquiry because inherent
strength depends on the consuming public’s perception
of a mark’s source-identifying effect. And in any given
case, determining the degree of a mark’s inherent
strength primarily involves an assessment and weighing of the relevant facts, rather than the clarification or
refinement of the governing legal standard. Because
3
the inherent-strength inquiry “involves the application
of a legal standard” to the circumstances of particular
cases, the inquiry is best viewed as presenting a “ ‘mixed
question of law and fact,’ ” id. at 423-424 (citation omitted), in which the factual component predominates.
STATEMENT
A. Legal Background
1. Trademarks
A trademark is a “word, name, symbol, or device”
used by a person “to identify and distinguish his or her
goods” in commerce and “to indicate the source of the
goods.” 15 U.S.C. 1127. A trademark’s “ ‘primary’ function” is “ ‘to identify the origin or ownership of the article to which it is affixed’ ”—that is, to “identif [y] a product’s source” and “distinguish[ ] that source from others.” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599
U.S. 140, 146 (2023) (citation omitted).
Under common-law principles, the person who first
uses a “distinctive mark[]” in commerce to identify his
or her goods can acquire certain rights in the mark, including a limited right to “prevent[] others from using”
it. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S.
138, 142 (2015). The right to exclude allows trademarks
to fulfill their essential function of “help[ing] distinguish a particular artisan’s goods from those of others.”
Ibid. Consumers who recognize a mark can then rely
on it to identify “the goods and services that they wish
to purchase, as well as those they want to avoid.” Jack
Daniel’s, 599 U.S. at 146 (citation omitted).
Although trademarks are created by state rather
than federal law, “Congress has long played a role in
protecting them.” B&B Hardware, 575 U.S. at 142. The
current federal trademark scheme dates to the Trade-
4
mark Act of 1946, ch. 540, 60 Stat. 427 (15 U.S.C. 1051
et seq.), popularly known as the Lanham Act. That Act
includes two relevant “adjudicative mechanisms to help
protect marks.” B&B Hardware, 575 U.S. at 142.
“First, a trademark owner can register its mark with
the PTO” to obtain “ ‘important legal rights and benefits’ ” in connection with its mark. Ibid. (citation omitted); see 15 U.S.C. 1051-1072. “Second, a mark owner
can bring a suit for infringement in federal court.” B&B
Hardware, 575 U.S. at 142.
2. Registration and distinctiveness
To be registered, a trademark must, inter alia, “distinguish[]” “the goods of the applicant * * * from the
goods of others.” 15 U.S.C. 1052. In other words, it
must be “distinctive.” United States Patent & Trademark Office v. Booking.com B.V., 591 U.S. 549, 553
(2020); see Wal-Mart Stores, Inc. v. Samara Bros., 529
U.S. 205, 210-211 (2000); see also 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:2, at 965 (5th ed. 2025) (explaining that a mark
must be “distinctive” to be a valid trademark).
“[C]ourts have held that a mark can be distinctive in
one of two ways.” Wal-Mart, 529 U.S. at 210. First, a
mark will be “inherently distinctive” if its “ ‘intrinsic nature serves to identify a particular source.’ ” Ibid. (citation omitted). Second, a mark—whether inherently distinctive or not—will have “acquired distinctiveness” if it
has obtained a “secondary meaning,” so that “ ‘in the
minds of the public, the [mark’s] primary significance
* * * is to identify the source of the product rather than
the product itself.’ ” Id. at 211 & n.* (citation omitted);
see 15 U.S.C. 1052(f ) (authorizing registration of a mark
that “has become distinctive of the applicant’s goods”).
5
Courts classify marks on a spectrum of “increasing
distinctiveness”: “(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc.
v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d
4, 9 (2d Cir. 1976) (Friendly, J.) (setting out the formulation); 1 McCarthy § 11:2, at 966. A generic mark refers to the “ ‘class’ of goods” that encompasses the goods
to which the mark is attached “(e.g., ‘wine’),” and it is
ineligible for registration because it is “incapable of ‘distinguishing [the mark-owner’s] goods from the goods of
others.’ ” Booking.com, 591 U.S. at 554, 556 (brackets
and citations omitted). A descriptive mark is just that—
it is “merely descriptive of a product” (e.g., “creamy” for
yogurt). Two Pesos, 505 U.S. at 769. Such a mark is
“not inherently distinctive,” but it may be registered if
it has “acquired distinctiveness.” Ibid.; see 15 U.S.C.
1052(e)(1) and (f ).
The last three categories—fanciful, arbitrary, and
suggestive marks—“are deemed inherently distinctive
and are entitled to protection” without proof of acquired
distinctiveness. Two Pesos, 505 U.S. at 768-769; see 1
McCarthy §§ 11:5, 11:11, 11:62, at 974, 977, 1126-1127.
A suggestive mark—the category of mark involved
here—“suggests, but does not directly and immediately
describe, some aspect of the” product. 1 McCarthy
§ 11:62, at 1126-1127. For example, “Tide” does not describe laundry detergent; it evokes an ocean tide to
market it. See Booking.com, 591 U.S. at 553.1
Fanciful word marks (e.g., Exxon gasoline) use new “words invented solely for their use as trademarks,” while arbitrary marks
(e.g., Shell gasoline) use existing words “in an unfamiliar way.”
Abercrombie & Fitch, 537 F.2d at 11 n.12.
1
6
3. Trademark infringement and trademark strength
a. The Lanham Act supplies federal causes of action
for trademark infringement, which require proof that
an allegedly infringing use of a mark “is likely to cause
confusion, or to cause mistake, or to deceive.” 15 U.S.C.
1114(1) (registered marks), 1125(a)(1)(A) (unregistered
marks). The owner of a valid trademark therefore must
show that the alleged infringement “is likely to produce
confusion in the minds of consumers about the origin of
the goods or services in question.” KP Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111, 117 (2004).2
To assess whether a likelihood of confusion exists in
a case involving related goods, the courts of appeals
have adopted slightly different multi-factor tests under
which relevant factors “are to be weighed and balanced
one against the other.” 3 McCarthy § 24:30 & n.6, at
907-908 (2026); see id. §§ 24:27-24:28, at 905-906. The
Second Circuit applies a test first articulated in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492,
495 (2d Cir.) (Friendly, J.), cert. denied, 368 U.S. 820
(1961) which considers eight “non-exclusive factors”:
(1) the “ ‘strength’ ” of the trademark, (2) the similarity
between that mark and the allegedly infringing one,
(3) the proximity of the parties’ products and of their
competitiveness, (4) the likelihood that the prior owner
may “ ‘bridge the gap’ ” in the markets for the products,
A registered trademark carries a presumption of validity, 15
U.S.C. 1057(b), and ordinarily becomes incontestable after five
years of continuous use, 15 U.S.C. 1065. See Wal-Mart, 529 U.S. at
209. “[T]he general principles qualifying a mark for registration
* * * are for the most part applicable in determining whether an unregistered mark is [a valid mark] entitled to protection” under Section 1125(a)(1)(A)’s cause of action. Id. at 210 (citation omitted).
2
7
(5) any evidence of actual confusion, (6) the defendant’s
good faith, (7) the relative quality of the products, and
(8) the relevant buyers’ sophistication. Pet. App. 20a,
50a (citation omitted). The relevance and overall importance of any particular factor depend on the circumstances of the specific case. See, e.g., Restatement
(Third) of Unfair Competition § 21 cmt. a, at 227 (1995)
(Third Restatement).
b. Although the specific factors considered in the
likelihood-of-confusion analysis vary somewhat from
circuit to circuit, all circuits treat the senior mark’s
“strength” as a relevant consideration. See 1 McCarthy
§ 11:73, at 1153. Determining the strength of a particular mark does not involve a yes-or-no inquiry but instead requires an assessment of where along a spectrum of strength the mark falls. Id. § 11:74, at 1157. An
assessment of trademark strength measures the degree
to which the mark will be “remembered” and “associated in the public mind” with the product’s source. Id.
§ 11:73, at 1156 (citation omitted). And because it
measures “the degree to which the [mark] is associated
by prospective purchasers with a particular source,” it
bears on “the likelihood that [they] will [also] associate
* * * a similar [mark] found on other goods” or services
with that source. Third Restatement § 21 cmt. i, at 232233; see 3 Restatement of Torts § 731(f ) & cmt. e, at 600,
602-603 (1938) (First Restatement). “The stronger the
mark, the more likely it is that encroachment on it will
produce confusion,” First Sav. Bank, F.S.B. v. First
Bank Sys., Inc., 101 F.3d 645, 653 (10th Cir. 1996) (citation omitted), while “the weaker the mark, the less protection it receives,” Florida Int’l Univ. Bd. of Trs. v.
Florida Nat’l Univ., Inc., 830 F.3d 1242, 1256 (11th Cir.
2016) (citation omitted).
8
A trademark’s overall strength depends on both its
“conceptual” (or inherent) strength and its “commercial” (or acquired) strength—concepts that represent
“separate dimensions of strength” viewed “on a time
scale.” 1 McCarthy §§ 11:73, 11:80, at 1153, 1170; see
Pet. App. 51a (referring to terms as “inherent” and “acquired” strength). Conceptual/inherent strength—the
subcomponent of the likelihood-of-confusion analysis
that is primarily at issue in this case—reflects “the inherent potential of the term at the time of its first use.”
1 McCarthy § 11:73, at 1153. And because “the strength
of [a] mark turns on its origin-indicating quality[ ] in the
eyes of the purchasing public,” when a “suggestive”
mark (the category of mark at issue here) is first used
in commerce, its conceptual strength may be weak or
only moderately strong. Lang v. Retirement Living
Publ’g Co., 949 F.2d 576, 581 (2d Cir. 1991) (citation and
internal quotation marks omitted). That may be true,
for example, if there has already been significant “prior
use of [the] mark’s text in other marks, particularly in
the same field of merchandise or service.” Variety
Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 662
(4th Cir. 2018) (citation omitted). In that case, “[c]onsumers are unlikely to associate [the new] mark with a
unique source.” Ibid. (citation omitted); see Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 385 (2d Cir.
2005), cert. denied, 547 U.S. 1019 (2006).
Commercial/acquired strength evaluates a mark’s
“actual customer recognition value,” developed through
the mark’s use in commerce, “at the time the mark is
asserted in litigation.” 1 McCarthy § 11:73, at 1153. Because a mark’s overall strength depends on both its inherent and commercial strength, an inherently strong
9
mark may “lack [overall] strength” if it lacks commercial strength. Id. § 11:80, at 1174 (citation omitted).
B. Factual And Procedural Background
1. Petitioner RiseandShine Corporation, doing business as Rise Brewing, sells nitro-brewed, canned coffee
nationwide. See Pet. App. 3a, 46a-47a. RiseandShine
uses “RISE” as a mark for its product and has registered “RISE” as a word and design mark. Ibid.3
In 2021, RiseandShine filed this district-court action
against respondent PepsiCo, Inc., alleging that PepsiCo
had infringed its “RISE” mark. See Pet. App. 15a-17a.
At the time, PepsiCo was selling a caffeinated, canned
energy drink nationwide using the mark “MTN DEW
RISE ENERGY,” id. at 3a, 47a, and PepsiCo allegedly
had referred to that product as simply “Mtn Dew
RISE” or “RISE,” First Am. Compl. 18 (July 26, 2021).
The district court granted RiseandShine’s motion for
a preliminary injunction, Pet. App. 64a-97a, against
PepsiCo’s use of its “MTN DEW RISE ENERGY”
mark, id. at 94a-95a. In its analysis of the strength of
RiseandShine’s “RISE” mark, id. at 80a-84a, the court
found the mark to be suggestive and thus “inherently
distinctive,” id. at 82a, and further found that the evidence tilted “slightly” in favor of finding acquired
strength, id. at 82a-84a. The court determined that RiseandShine had established a likelihood of success on the
merits by virtue of the two marks’ “degree of similarity,”
RiseandShine has registered “RISE BREWING CO.” as a word
mark and the RISE BREWING CO. logo as a design mark. Pet.
App. 46a. In its registration, the company disclaimed “ ‘BREWING
CO.,’ ” thus making “RISE” “the prominent, distinctive portion of
the registered RISE Marks.” First Am. Compl. 17 (July 26, 2021).
3
10
“the proximity of ” the parties’ “areas of commerce,” and
“credible testimony of actual confusion.” Id. at 91a.
2. The court of appeals vacated the preliminary injunction. Pet. App. 45a-63a. The court concluded that
the district court had “erred in its evaluation of what is
often the most important factor—the strength of [RiseandShine’s] mark—as well as in its finding of similarity
in the appearance of the products.” Id. at 50a.
a. The court of appeals held that the district court
had committed “legal error” in its strength-of-mark
analysis by “fail[ing] to recognize the inherent weakness of [RiseandShine’s] mark.” Pet. App. 51a, 55a; see
id. at 51a-61a. The court explained that a mark’s
strength “ ‘depends ultimately’ ” on “its ‘origin-indicating’ quality[] in the eyes of the purchasing public.” Id.
at 51a (citation omitted). The court agreed with the district court that RiseandShine’s mark is suggestive, but
it observed that “labeling a mark as ‘suggestive’ is not
the end of the inquiry.” Id. at 54a.
The court of appeals found the inherent strength of
“RISE” to be “at the low end of the spectrum of suggestive marks,” Pet. App. 55a, because of “[t]he close associations between the word ‘Rise’ and coffee” as a class
of goods, specifically “[c]offee’s capacity to wake one up
and lift one’s energy, which is what the ‘RISE’ mark
suggests,” id. at 56a-57a. The court also stated that
other companies’ “use of the term ‘Rise’ in the beverage
market further underlines the weakness of the mark.”
Id. at 57a. The court explained that, “when [RiseandShine] began to use its mark,” numerous companies
were already “us[ing] the term ‘Rise’ in the same way”
—“i.e., to allude to increased energy, particularly in the
morning hours.” Id. at 58a.
11
The court of appeals stated that the district court’s
failure to identify such inherent weakness was “legal error.” Pet. App. 55a. While acknowledging its precedent
treating “the classification of a mark [as] a factual matter,” the court relied on other decisions in which it had
found “an undeniable legal element in the determination of how much strength a given mark commands.”
Ibid. The court stated that “[b]etween descriptive and
suggestive marks, there may be some room for difference of opinion; nonetheless, the discretion allowed to a
factfinder in finding inherent strength is minimal at
best.” Id. at 55a n.1. The court then concluded that,
“[g]iven the inherent weakness of ‘Rise’ for coffee, the
[strength] factor [did] not favor” RiseandShine, id. at
59a, because that inherent weakness was not “sufficient[ly]” offset by evidence of acquired strength, see
id. at 61a.
b. The court of appeals further held that the district
court’s “finding of similarity in the appearance of the
products” constituted “clear error.” Pet. App. 50a, 61a;
see id. at 61a-63a. The court based that conclusion primarily on its view that “the word ‘Rise’ in this context
is not distinctive,” and on a comparison between the designs of the energy-drink cans each company had produced, finding that their “overall appearances” were
“very dissimilar.” Id. at 62a.
3. On remand, the district court granted summary
judgment to PepsiCo. Pet. App. 15a-44a. In assessing
the inherent strength of RiseandShine’s mark, the court
viewed the court of appeals’ conclusions in the earlier
appeal as “binding” in the summary-judgment proceedings. Id. at 28a, 32a. The court therefore determined
that the prior appellate decision “compel[led] a finding
12
that * * * [‘RISE’] is inherently weak as a matter of
law.” Id. at 29a.
After addressing other factors relevant to the likelihood of consumer confusion, Pet. App. 34a-41a, the district court weighed those factors and concluded at summary judgment that no such likelihood existed. Id. at
41a-43a. The court viewed the court of appeals’ analysis
in the first appeal as requiring it to place significant
weight on the strength and similarity factors. See id. at
42a. The court thus found that, because RiseandShine’s
“RISE” mark was weak, it received “only an extremely
narrow scope of protection.” Ibid. (citation omitted).
The court ultimately concluded that, because “[t]he remaining * * * factors are insufficient to overcome the
weakness of the mark and the Circuit’s finding of dissimilarity,” PepsiCo was entitled to summary judgment. Id. at 43a.
4. The court of appeals affirmed. Pet. App. 1a-14a.
The court first rejected RiseandShine’s argument that
the district court had erred in failing to analyze “inherent strength [as] a question of fact.” Id. at 6a. The court
observed that its decisions had long recognized that
evaluating a mark’s “degree of strength” has “a considerable component of law.” Ibid. (citation omitted); see
ibid. (“Earlier this year, we reiterated in no uncertain
terms that ‘a mark’s inherent strength is a legal question.’ ”) (brackets and citations omitted). The court concluded that it was bound at the summary-judgment stage
by “the previous panel’s determination that ‘RISE’ [is],
as a matter of law, an inherently weak mark for a coffee
product.” Id. at 7a.
The court of appeals rejected RiseandShine’s other
contentions. The court rejected the company’s argument that it had raised “triable issues of fact regarding
13
the acquired strength of its mark,” Pet. App. 8a; see id.
at 8a-10a; and it found no error in the district court’s
“treat[ment of ] the likelihood of confusion question as a
matter of law,” id. at 10a; see id. at 10a-13a. Based on
those holdings, and on the prior panel’s ruling that the
companies’ marks are not similar, see id. at 12a, the
court affirmed the district court’s ultimate summaryjudgment determination that “there was not a likelihood that consumers would be confused by PepsiCo’s
use of the term ‘Rise,’ ” id. at 11a.
SUMMARY OF ARGUMENT
The Lanham Act “focus[es] on consumer perception,”
specifically the “meaning” that trademarks convey “to
consumers.” United States Patent & Trademark Office
v. Booking.com B.V., 591 U.S. 549, 556 (2020). Where
an inquiry “operates from the perspective of an ordinary purchaser or consumer,” it is ordinarily treated as
a factual question within “the ken of a jury.” Hana Fin.,
Inc. v. Hana Bank, 574 U.S. 418, 420, 422 (2015). The
assessment of a mark’s inherent strength involves such
an inquiry: Based on the evidence in a case, the factfinder must ascertain the consuming public’s perception
of a mark’s source-identifying effect and ultimately
make a “factual judgment” about the degree to which
the mark identifies a product’s source “to consumers.”
Id. at 425 n.2. Although inherent strength has a legal
component, it is best viewed as a mixed question of law
and fact for which the factual element predominates. A
district court therefore should treat the issue as essentially factual when the court decides at summary judgment whether a reasonable jury could find for the nonmoving party.
A. A mixed question of law and fact is generally adjudicated as a factual question if its resolution entails
14
“primarily * * * factual work.” U.S. Bank N.A., Tr. ex
rel. CWCapital Asset Mgmt. LLC v. Village at Lakeridge, LLC, 583 U.S. 387, 396 (2018). That typically is
so when the applicable legal standard identifies a set of
factors that are to be weighed and balanced based on
the evidence in a particular case. One example is trademark “tacking,” where a legal standard is applied to the
facts to ascertain whether, under “an ordinary consumer’s understanding of the impression that a mark
conveys,” an updated mark conveys the same impression as the original. Hana Fin., 574 U.S. at 422. Assessing a mark’s inherent strength involves a similar inquiry.
B. Trademark strength is one factor in a broader inquiry used to determine whether the defendant’s use of
an allegedly infringing mark is likely to confuse consumers about the source of goods. In this context the
term “strength” refers to a trademark’s effectiveness in
communicating to consumers that goods bearing the
mark are associated with a specific source. The stronger
a mark is—i.e., the more effectively it identifies a particular source of goods—the more likely it is that a different vendor’s use of a similar mark will cause consumer confusion. The “inherent” (or “conceptual”)
strength of a mark is its strength at the time of its first
use.
Inherent strength is determined based on several
fact-intensive and mark-specific considerations, including an evaluation of whether the mark is inherently distinctive in context, an examination of whether the
mark’s strong association with a general class of products may diminish the mark’s ability to identify a specific source of goods, and an assessment of the mark’s
source-identifying effect in light of preexisting marks
15
and similar goods already known to consumers. That
inquiry is primarily a factual one. And while inherent
strength has a legal component that would properly be
conveyed to a jury through instructions—which would
define the term and explain its relevance to a proper assessment of the likelihood of consumer confusion—the
inherent-strength inquiry ultimately requires a factual
judgment about what consumers will perceive a mark to
signify.
The fact that inherent strength is a subcomponent of
the broader likelihood-of-confusion inquiry only reinforces its predominately factual nature. The ultimate
question of likely confusion—also a mixed question that
turns on consumer perceptions—is itself properly adjudicated as a predominately factual inquiry.
C. The predominately factual nature of inherent
strength does not preclude summary judgment in appropriate cases. Summary judgment is warranted if no
genuine dispute exists over any material fact, i.e., if no
reasonable jury could find for the non-moving party. In
Lanham Act suits, inherent strength is simply one component of the strength-of-mark inquiry, which itself is a
single factor among several that bear on the ultimate
likelihood-of-confusion determination. In particular
cases, the evidence in the summary-judgment record
may preclude a finding for the nonmoving party on the
issue of inherent trademark strength, on the issue of
overall trademark strength, or on the ultimate issue of
likely consumer confusion.
Whether PepsiCo is entitled to summary judgment
in this case, however, lies outside the question presented. That issue should therefore be considered
afresh by the courts below on remand.
16
ARGUMENT
A TRADEMARK’S INHERENT STRENGTH IS PREDOMINATELY A QUESTION OF FACT
The court of appeals erred in concluding that a trademark’s “inherent strength” should be resolved at summary judgment as “a question of law.” Pet. App. 6a. Inherent strength is a mixed question of law and fact for
which the factual aspect predominates.
A. A Question That Entails A Primarily Factual Inquiry Is
Treated As A Factual Question At Summary Judgment
1. The adjudication of cases routinely requires the
resolution of “three kinds of issues”: “purely legal”
questions, “purely factual” questions, and “mixed question[s]” involving some “combination of the other two.”
U.S. Bank N.A., Tr. ex rel. CWCapital Asset Mgmt.
LLC v. Village at Lakeridge, LLC, 583 U.S. 387, 393
(2018). The proper characterization of a particular
question has significant adjudicatory consequences. At
summary judgment, a district court must decide any
relevant legal question that is disputed by the parties,
even if the issue is close and reasonable minds could disagree as to its proper resolution. The court may resolve
material factual questions “as a matter of law,” however, only if no “genuine dispute” exists about them,
Fed. R. Civ. P. 56(a), i.e., if no “reasonable jury” could
find for the non-moving party, Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). On appeal, absent
a contrary statutory directive, legal rulings are “reviewed de novo,” factual determinations are reviewed
“for clear error,” and mixed questions are reviewed under one of those two standards. Monasky v. Taglieri,
589 U.S. 68, 83-84 (2020).
17
Although an identification of purely legal and purely
factual questions is ordinarily straightforward, “[m]ixed
questions are not all alike” and can require more analysis. U.S. Bank, 583 U.S. at 395-396. The standard for
appellate review of “a mixed question” in nonconstitutional contexts depends on “whether answering it entails primarily legal or factual work.” Id. at 396 & n.4.
Where answering a mixed question principally involves
“amplifying or elaborating on a broad legal standard,”
thereby “developing auxiliary legal principles of use in
other cases,” the question involves “primarily legal”
work and “appellate courts should typically review a decision de novo.” Id. at 396. But where answering a
mixed question will “immerse courts in case-specific
factual issues”—issues that, for instance, can require
the court to “weigh evidence”—the question implicates
“primarily * * * factual work,” and “appellate courts
should usually review a decision with deference.” Ibid.
In such circumstances, the ultimate determination is
predominately factual because it turns on a “ ‘factual inference’ ” drawn by “tak[ing] a raft of case-specific * * *
facts, consider[ing] them as a whole, [and] balanc[ing]
them one against another” under a governing legal standard. Id. at 397 (brackets, citation, and footnote omitted).
Those principles directly bear on the question presented here. The question at summary judgment is
whether the record reveals a “genuine dispute as to any
material fact,” Fed. R. Civ. P. 56(a), i.e., whether the
summary-judgment “evidence is such that a reasonable
jury could return a verdict for the nonmoving party,”
Anderson, 477 U.S. at 248. The more fact-intensive a
particular mixed question is, the greater the jury’s latitude in resolving it, and the more hesitant a court at
summary judgment should be (where factual disputes
18
exist) to conclude that the issue has a single, legally dictated answer.
2. In Hana Financial, Inc. v. Hana Bank, 574 U.S.
418, 422 (2015), the Court determined that the “[a]pplication of a test that relies upon an ordinary consumer’s
understanding of the impression that a mark conveys”
requires a determination that “falls comfortably within
the ken of a jury.” The Court held that questions concerning the propriety of trademark “tacking”—which
allows a party to use the priority date of its original
trademark when seeking protection for a revised version of the mark—are properly submitted to the jury in
an infringement suit. See id. at 419-420, 422-423. Tacking is appropriate when “ ‘two marks * * * ‘create the
same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’ ” Id. at 422
(citation omitted). The Court explained that—as it has
“long recognized across a variety of doctrinal contexts”
—“when the relevant question is how an ordinary person or community would make an assessment, the jury
is generally the decisionmaker that ought to provide the
fact-intensive answer.” Ibid.
The Court in Hana Financial recognized that “the
application of a legal standard” is necessary when applying “the ‘legal equivalents’ test” to determine
whether trademark tacking is appropriate in a particular instance. Hana Fin., 574 U.S. at 423. But it explained that “the application-of-legal-standard-to-fact
sort of question, commonly called a mixed question of
law and fact, has typically been resolved by juries.” Id.
at 423-424 (citation, ellipsis, and internal quotation
marks omitted). The Court concluded that “[t]he ‘mixed’
analysis that takes place during the tacking inquiry is
no different.” Id. at 424. That inquiry requires a “fac-
19
tual judgment” about “an ordinary consumer’s understanding of the impression that a mark conveys,” asking
whether an updated version of a trademark creates
“ ‘the same, continuing commercial impression’ ” in “ ‘the
eyes of a consumer.’ ” Id. at 422, 425 n.2 (citations omitted).
The Court in Hana Financial observed that tacking
is “like most issues in trademark law” in that it is determined “from the perspective of the ordinary purchaser
of [the relevant] goods or services.” 574 U.S. at 422 (citation omitted). The Court has similarly emphasized
that “the Lanham Act’s focus [is] on consumer perception,” and that “the relevant meaning of a [mark] is its
meaning to consumers.” United States Patent & Trademark Office v. Booking.com B.V., 591 U.S. 549, 556
(2020). As explained below, the determination of a
trademark’s inherent strength is no different. It requires an assessment of consumer perception as a predominately factual question and should be treated as
such at summary judgment.
B. A Trademark’s Inherent Strength Measures The Mark’s
Probable Effect On The Minds Of Ordinary Consumers
At The Time Of The Mark’s First Use, Which Entails A
Primarily Factual Inquiry
A trademark’s inherent (i.e., conceptual) strength—
its strength when it is first used—measures the degree
to which the mark will signify in the minds of consumers
the source of the goods to which it is attached. Inherent
strength is considered as part of a broader inquiry into
whether consumer confusion is likely. That ultimate
likelihood-of-confusion issue is itself a mixed question
in which the factual elements predominate.
20
1. Inherent strength is relevant to a likelihood of consumer confusion and therefore measures the mark’s
effect in the minds of such consumers
a. The “likelihood of confusion” standard central to
trademark-infringement claims asks whether the defendant’s allegedly infringing conduct “is likely to produce confusion in the minds of consumers about the
origin of the goods or services in question.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543
U.S. 111, 117 (2004). The “crucial issue” is “whether
there is any likelihood that an appreciable number of
ordinarily prudent purchasers are likely to be misled,
or indeed simply confused, as to the source of the goods
in question.” Savin Corp. v. Savin Grp., 391 F.3d 439,
456 (2d Cir. 2004) (citation omitted), cert. denied, 546
U.S. 822 (2005); see 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition §§ 23:2 & n.1,
23.12 & n.1, at 420-421, 522-525 (5th ed. 2026); Restatement of Torts § 728 cmt. a, at 591 (1938); see also Restatement (Third) of Unfair Competition § 20, cmt. g, at
216 (1995) (“significant number”).
To provide structure to that inquiry, the courts of appeals have adopted various multi-factor tests, which
identify a range of considerations that serve as a “road
map on how to reach a conclusion on the ultimate issue
of ‘likelihood of confusion.’ ” 3 McCarthy §§ 24:28, 24:30,
at 905-908. “[A]ll” of those tests “owe their origin to the
1938 Restatement of Torts,” which identified a “list of
foundational factors” that formed “the basis for the various lists” later adopted by the circuits. Id. §§ 24:29 &
n.1, 24:30, at 906-908.
The first Restatement emphasized that its own list
was simply a “[non]exclusive catalogue of relevant factors” that “generally,” First Restatement §§ 729 & cmt.
21
a, 731 & cmt. a, at 593, 601, “bear[] on th[e] issue” of
“confusing similarity” to a protected trademark, an issue that turns on “the probable or actual reactions of
purchasers,” id. § 728 cmt. a, at 591. See id. § 717(1)
and (2)(a), at 562 (defining trademark infringement).
The Second Circuit cited that Restatement when it first
articulated its own eight-factor test, which the court explained did “not exhaust the possibilities” because “still
other variables [may need to be taken] into account”
when considering whether consumer confusion is likely.
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492,
495 (2d Cir.) (citing First Restatement §§ 729-731), cert.
denied, 368 U.S. 821 (1961).
The factors identified in the various multi-factor
tests are “merely discrete aspects of a comprehensive
analysis intended to achieve a practical evaluation of
what consumers are likely to believe when they encounter the competing [trademark] in the marketplace.”
Third Restatement § 21 cmt. b, at 229. That “likelihood
of confusion” must be “determined by the totality of the
circumstances,” so that “any factor that is likely to influence the impression conveyed to prospective purchasers by the actor’s use of [a mark] is relevant.” Id.
§ 21 cmt. a & m, at 227, 236; see id. § 21, at 226 (instructing that relevant considerations include “all the circumstances involved in the marketing of the respective
goods or services”).
b. Once each of the relevant factors has been evaluated, the factors must be “weighed and balanced one
against the other.” 3 McCarthy § 24:30, at 908. Ultimately, whether a likelihood of consumer confusion exists will “depend[] on the interplay of all [pertinent] factors,” where “[t]he relative importance of any factor
22
* * * depends on the facts of the particular case.” Third
Restatement § 21 cmt. a, at 227.
The Second Circuit’s jurisprudence reflects that understanding. The court of appeals has observed that its
Polaroid factors are designed to “guide deliberation”
into “whether there is a likelihood of confusion.” New
York Stock Exch., Inc. v. New York, New York Hotel,
LLC, 293 F.3d 550, 555 (2d Cir. 2002). The court has
long emphasized that no single “factor is determinative”; that “each must be considered in the context of all
of the other factors”; and that “the ultimate conclusion”
of “whether there is likelihood of confusion” must be
reached “from a balance of these determinations.” Plus
Prods. v. Plus Disc. Foods, Inc., 722 F.2d 999, 1004 (2d
Cir. 1983) (citing cases); Pet. App. 5a (similar).
c. One of the relevant factors is trademark strength,
which is “the degree to which [a mark] is associated by
prospective purchasers with a particular source.” Third
Restatement § 21 cmt. i, at 233; see p. 7, supra. Inherent (or conceptual) strength is simply a mark’s predicted strength at the time of its first use. See p. 8, supra. As with mark strength more generally, the inherent-strength inquiry assesses a mark’s effect on “the
mind of the consuming public” to judge the degree to
which consumers will associate it with a particular
source of goods. 1 McCarthy § 11:73, at 1156 (citation
omitted). And like the overall likelihood-of-confusion
inquiry (and like trademark tacking), the strength inquiry calls for the “[a]pplication of a test that relies
upon an ordinary consumer’s understanding of the impression that a mark conveys,” Hana Fin., 574 U.S. at
422.
23
2. Inherent strength entails a primarily factual inquiry
A determination of a trademark’s inherent strength
considers the circumstances that existed when the mark
was first used. Those circumstances include (1) the
mark’s degree of inherent distinctiveness in light of the
services or goods with which it is used and (2) the marketplace conditions that existed at that time of its first
use. Because an assessment of inherent strength entails a primarily factual inquiry, inherent strength is
properly analyzed at summary judgment in the same
manner as other issues that a factfinder might resolve
based on case-specific evidence.
a. The initial assessment of whether a particular
mark has any inherent distinctiveness turns on whether
“prospective purchasers are likely to perceive [the
mark] as a designation that * * * identifies goods or services produced or sponsored by a particular person.”
Third Restatement § 13(a), at 104; see id. § 13 cmt. c, at
106 (explaining that for inherently distinctive marks,
“prospective purchasers can be expected to view” or
“perceive” the mark as indicating the source of a good
or to “place primary emphasis on [the mark’s] identifying” significance). That consumer-oriented analysis is
fact-intensive and mark-specific. “[A] term that is in
one category for a particular product may be in quite a
different one for another,” Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), and
may even be generic if the term has “enter[ed] [the]
public discourse” and become a “part of our vocabulary,” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894,
900 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003).
The courts of appeals are thus uniform in treating a
mark’s proper classification among the five recognized
24
categories of distinctiveness (see p. 5, supra) as a factual issue. 1 McCarthy § 11:3 & nn.1-2, at 969-970.
The degree to which an inherently distinctive mark
will identify a particular source in the mind of consumers further depends on the relationship between the
mark and the goods to which it is affixed. The sourceidentifying potential of a suggestive word mark (like
“RISE”) will depend in part on whether consumers perceive a close association between the mark and similar
goods sold by other companies. If consumers have that
perception, the mark’s ability to identify a particular
source will be limited.
This case illustrates that principle. In determining
that the mark “RISE” was inherently weak, the court of
appeals observed that the “mark suggests” “[c]offee’s
capacity to wake one up and lift one’s energy.” Pet.
App. 57a. The court concluded, however, that “[t]he
close associations between the word ‘Rise’ and coffee
constituted a weakness of the mark under the trademark law,” id. at 56a, because those associations diminished the likelihood that consumers would perceive the
mark as identifying a particular source of coffee, see id.
at 55a-57a.
b. The marketplace conditions that exist when a
mark is first used can further affect its inherent
strength. In this case, for instance, the court of appeals
found that “RISE” had a limited ability to identify
RiseandShine specifically as the source of its coffee
product because, when the mark was first used, numerous other companies had already “use[d] * * * the term
‘Rise’ in the beverage market” “in the same way” “to
allude to increased energy, particularly in the morning
hours.” Pet. App. 57a-58a. Based on the record evidence concerning pertinent marketplace practices at
25
the time when RiseandShine first used the “RISE”
mark, the court thus drew a (factual) inference about
the mark’s source-identifying effect “in the eyes of the
purchasing public.” Id. at 51a (citation omitted).
c. The analysis that the Second Circuit used to assess the inherent strength of RiseandShine’s mark
bears little resemblance to the analysis that courts typically conduct in deciding pure questions of law, such as
the meaning of disputed statutory provisions. See
Loper Bright Enters. v. Raimondo, 603 U.S. 369, 385
(2024). The court of appeals’ conclusions about the
“strong logical association[ ] between ‘Rise’ and coffee,”
and the impact on consumer perceptions of other marks
“in the beverage market,” Pet. App. 55a, 57a, do not reflect the application of legal analysis or expertise. Rather, they represent the court’s own fact-dependent assessment of ordinary consumers’ experience and perceptions, based on record evidence of commercial practices that existed when RiseandShine first used the
“RISE” mark.
To be sure, the inherent-strength inquiry has a legal
component. Although the inquiry turns on ordinary
consumers’ perceptions, the term “inherent strength”
and its relevance to a proper assessment of likely consumer confusion will typically be unfamiliar to jurors.
Appropriate instructions therefore will be necessary to
explain those concepts and guide the jury’s consideration of relevant facts. Cf. Hana Fin., 574 U.S. at 424
(explaining that, “insofar as petitioner is concerned that
a jury may improperly apply the relevant legal standard
[for trademark tacking], the solution is to craft careful
jury instructions that make that standard clear”). But
given the inherent-strength inquiry’s focus on “the perspective of an ordinary purchaser or consumer,” id. at
26
420, and the likelihood that resolution of inherentstrength controversies will “immerse courts in casespecific factual issues,” U.S. Bank, 583 U.S. at 396, an
assessment of a trademark’s inherent strength involves
the sort of predominately factual question for which the
factfinder’s determination should be given significant
deference on appeal. For the same reasons, when a
court determines whether a reasonable jury could rule
for the non-moving party, it should bear in mind the
predominately factual nature of inherent-strength disputes and the jury’s primary role in balancing the relevant factual considerations.
d. PepsiCo cites Ornelas v. United States, 517 U.S.
690 (1996), and Santa Fe Independent School District
v. Doe, 530 U.S. 290 (2000), for the proposition that an
inquiry can be predominately legal even if it “operat[es]
from the perspective of an ordinary person.” Br. in
Opp. 36; see id. at 36-37. The Court in Ornelas held that
“the ultimate questions of reasonable suspicion and
probable cause,” which involve an evaluation of relevant
facts “from the standpoint of an objectively reasonable
police officer,” “should be reviewed de novo” on appeal.
517 U.S. at 691, 696. The Santa Fe Court held that
“[w]hether a government activity violates the Establishment Clause is ‘in large part a legal question,’ ” even
though the inquiry at that time turned in part on
“ ‘whether an objective observer * * * would perceive
[the challenged activity] as a state endorsement’ ” of religion, 530 U.S. at 308, 315 (citations omitted).
Those decisions are inapposite because each involved
application of “a constitutional standard” for which
there is “a strong presumption” of “de novo review.”
Bufkin v. Collins, 604 U.S. 369, 384 (2025). “In the constitutional realm,” the “calculus changes” to favor de
27
novo rather than deferential review because de novo review allows appellate courts to perform the important
function of clarifying applicable constitutional standards. U.S. Bank, 583 U.S. at 396 n.4 (distinguishing
First and Fourth Amendment decisions, including Ornelas, on this basis). Here, no such considerations warrant a departure from the principles discussed above.
3. The relationship between trademark strength and
the overall likelihood-of-confusion analysis reinforces
the predominately factual nature of the trademarkstrength inquiry
PepsiCo argues (Br. in Opp. 37) that a trademark’s
“conceptual strength” is “distinguishable” from questions that are properly considered factual under Hana
Financial because conceptual strength is simply one
“subsidiary” factor in a “multifactor test” used to perform “the ultimate ‘likelihood of confusion’ determination,” which “the Second Circuit and other circuits treat
as a legal question.” PepsiCo thus appears to argue
(ibid.) that inherent strength is properly deemed a legal
question because the overall likelihood-of-confusion determination depends on “a balancing test decided as a
legal question.” That contention lacks merit. The question of likely confusion, like that of trademark strength,
is a predominately factual issue that should itself be adjudicated as a factual issue at summary judgment.
In 1938, long before the courts of appeals had developed multi-factor tests for evaluating likely confusion,
it was understood that “[t]he issue of confusing similarity is an issue of fact as to the probable or actual reactions of purchasers.” First Restatement § 728 cmt. a, at
591. The first Restatement therefore explained that the
determination of likely confusion would be informed by
the Restatement’s list of “factors bearing on this issue,”
28
ibid., not decided by courts as a matter of law. The various circuits’ subsequent identification of their own lists
of relevant factors—all derived from the 1938 Restatement, see p. 20, supra—did not alter the nature of the
inquiry. The modern Restatement adheres to the view
that “whether the defendant’s use of a trademark creates a likelihood of confusion is properly regarded as a
question of fact.” Third Restatement § 21 cmt. m, at 236.
That conclusion flows directly from the analysis
above, and from the Lanham Act’s ultimate focus on
whether the use of a purportedly infringing mark “is
likely to produce confusion in the minds of consumers
about the origin of the goods or services in question.”
KP Permanent Make-Up, Inc., 543 U.S. at 117 (emphasis added). As the Court in Hana Financial observed,
application of a standard that depends “upon an ordinary consumer’s understanding of the impression that
a mark conveys falls comfortably within the ken of a
jury.” 574 U.S. at 422.
The ultimate likelihood-of-confusion determination
is predominately “a factual judgment” about the probable perceptions of ordinary consumers. Hana Fin., 574
U.S. at 425 n.2. The multi-factor tests developed by the
courts of appeals help to guide the inquiry by identifying and explaining relevant factors that ordinarily
should be considered, weighed, and balanced. Although
each circuit’s list of relevant factors is properly characterized as a legal standard, the factors themselves ask
for essentially factual conclusions about the circumstances of a particular case. The ultimate determination
therefore entails “primarily * * * factual work”: The
factfinder “takes a raft of case-specific * * * facts, considers them as a whole, [and] balances them one against
another” to draw a “ ‘factual inference’ ” about likely
29
consumer confusion. U.S. Bank, 583 U.S. at 396-397
(brackets, citation, and footnote omitted); see pp. 6-7,
21-22, supra.
The Second Circuit’s contrary view (Pet. App. 4a,
23a-24a & n.2) is incorrect.4 The primarily factual nature of the likelihood-of-confusion inquiry has become
particularly clear since this Court’s 2015 trademark decision in Hana Financial. “The clear majority of circuits” have correctly determined that the inquiry involves “an issue of fact,” and only the Second, Sixth, and
Federal Circuits have concluded otherwise. 3 McCarthy § 23:67, at 711; see id. § 23:73, at 718-727 (citing
cases). After this Court decided Hana Financial, the
Second Circuit considered that decision’s effect on its
own jurisprudence. See Car-Freshner Corp. v. American Covers, LLC, 980 F.3d 314, 326 n.4 (2d Cir. 2020).
But after observing that it had previously “considered
likelihood of confusion to be a question of fact,” the Second Circuit noted that it had since settled on the view
that the issue is a “question of law,” and the court “adhere[d] to th[at] view” notwithstanding Hana Financial. Ibid.; see Pet. App. 10a-11a (concluding that CarFreshner foreclosed revisiting the question); Souza v.
In its summary-judgment opinion below, the court of appeals
“reject[ed] RiseandShine’s argument that the district court erred in
treating the likelihood of confusion question as a matter of law,” and
the court cited post-Hana Financial Second Circuit decisions that
have “continued to hold that the likelihood of confusion test is a
question of law.” Pet. App. 10a. In a footnote later in its opinion,
however, the court stated that the likelihood-of-confusion issue
“could be submitted to a jury if there were enough evidence for a
reasonable jury to make the predicate findings to establish a likelihood of confusion.” Id. at 11a n.2. The court did not acknowledge
or attempt to explain the seeming contradiction between those two
aspects of its opinion.
4
30
Exotic Island Enters., Inc., 68 F.4th 99, 109 (2d Cir.
2023) (similar). 5
C. The Predominately Factual Nature of The InherentStrength Inquiry Does Not Preclude Summary Judgment In Appropriate Cases
For the reasons stated above, the court of appeals
erred in suggesting that a district court should treat inherent trademark strength as a question of law that the
court itself must resolve. This Court’s correction of that
error, however, would not foreclose the court of appeals
or district court from reconsidering on remand whether
summary judgment is warranted in this case. Summary
judgment is appropriate when the moving party shows
that “there is no genuine dispute as to any material fact”
and that the party “is entitled to judgment as a matter
of law.” Fed. R. Civ. P. 56(a). For at least three reasons, the predominately factual character of the inherentstrength inquiry does not preclude a Lanham Act plaintiff or defendant from satisfying that summary-judgment
standard.
1. “By its very terms,” the summary-judgment standard set forth in Rule 56(a) “provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that
there be no genuine issue of material fact.” Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 247-248 (1986). A
“dispute about a material fact is ‘genuine[]’ ” only “if the
The Sixth Circuit has noted the existence of “uncertainty over
[its] standard” in light of Hana Financial, but it has not considered
whether to revise its jurisprudence. Max Rack, Inc. v. Core Health
& Fitness, LLC, 40 F.4th 454, 464 (6th Cir. 2022). The Federal Circuit likewise has not yet considered the effect of Hana Financial on
its likelihood-of-confusion precedent.
5
31
evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” Id. at 248. Despite
the predominately factual character of the inherentstrength issue, the summary-judgment record in a particular case may be such that no reasonable jury could
resolve the issue in the nonmoving party’s favor. Cf.
Hana Financial, 574 U.S. at 423 (“If the facts warrant
it, a judge may decide a tacking question on a motion for
summary judgment or for judgment as a matter of law.”).
2. The inherent-strength inquiry is simply one component of the overall trademark-strength analysis, which
includes consideration of the mark’s acquired (or “commercial”) strength as well. Because a trademark’s inherent strength reflects the mark’s source-identifying
potential at the time of its first use, its impact on overall
strength may be diminished if substantial time has
passed between the mark’s first use and the defendant’s
allegedly infringing conduct. The descriptive mark
“American Airlines,” for instance, would have had no
appreciable tendency to identify a particular source of
air-transportation services when it was first used in 1934.
But the mark’s consistent use in commerce over the ensuing decades, in conjunction with the company’s now
iconic red-white-and-blue livery, makes that lack of inherent strength immaterial today. Conversely, an arbitrary or fanciful mark may initially appear to have considerable source-identifying potential, yet demonstrably fail over time to develop any appreciable customerrecognition value. 1 McCarthy § 11.80, at 1173; see Third
Restatement § 21 cmt. i, at 233.
3. Even when a “genuine” factual dispute about
overall trademark strength exists, such a dispute will
foreclose summary judgment only if it is “material” to
the ultimate determination as to likely consumer confu-
32
sion. See Fed. R. Civ. P. 56(a). Where other factors
bearing on likelihood of confusion are sufficiently clear,
summary judgment on that ultimate question may be
appropriate despite a genuine dispute as to the strength
of the plaintiff ’s trademark. Cases might arise, for example, in which the marks used by the plaintiff and defendant are so dissimilar that no reasonable juror could
find a likelihood of consumer confusion, regardless of
how strong the plaintiff ’s trademark was determined to
be. Cf. Pet. App. 5a (identifying “the degree of similarity between the plaintiff ’s mark and the defendant’s allegedly imitative use” as the second factor in the applicable likelihood-of-confusion test).
This case, however, provides no occasion for the
Court to consider whether PepsiCo was entitled to summary judgment on the ultimate issue of likely consumer
confusion. The question presented in the petition for
certiorari instead focuses more narrowly on whether
the court of appeals erred in treating a subsidiary aspect of the likelihood-of-confusion inquiry as a question
of law. The Court therefore should correct the court of
appeals’ error, vacate the court’s judgment, and remand
the case for further proceedings.
33
CONCLUSION
The judgment of the court of appeals should be vacated and the case remanded for further proceedings.
Respectfully submitted.
D. JOHN SAUER
Solicitor General
BRETT A. SHUMATE
Assistant Attorney General
MALCOLM L. STEWART
Deputy Solicitor General
ANTHONY A. YANG
Assistant to the
Solicitor General
DANIEL TENNY
BEN LEWIS
Attorneys
SEPTEMBER 2026
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.